Trade mark law, case II GSK 63/05

June 22nd, 2006, Tomasz Rychlicki

Hortino (formerly Zakład Przetwórstwa Owocowo-Warzywnego, “Zakład” for short) entered a sale agreement with Hortex on 31 May 2000, purchasing one of the Hortex’s manufacturing units located in Leżajsk. The agreement did not apply to any trade mark assets and was not a trade mark licence agreement at all. In June 2000, Zaklad added to its company name the word “Hortino”. One month later, the company (now called Hortino) applied to the Polish Patent Office (PPO) to register a trade mark for goods in classes 5, 29, 30, 31, 32, 39, and 42 of the Nice Classification. The trade mark was represented as a white snowflake on a blue rectangular background with the word “Hortino” in white letters.


The PPO registered Hortino’s trade mark R-130090 in June 2001. Hortex challenged the registration before the PPO claiming that the decision to grant Hortino’s trade mark was inconsistent with article 9(1)(1) he old Polish Trade Mark Act – TMA – (in Polish: Ustawa o znakach towarowych) of 31 January 1985, Journal of Laws (Dziennik Ustaw) No 5, item 15, with later amendments, repealed on 22 August 2001 by the Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments.

Hortex claimed that this section clearly precluded registration of a trade mark with later priority if its usage was in conflict with an already-registered trade mark. Hortex was already the owner of a registered trade mark composed of a white background, green bordering, and the letters “Hortex” in red. The Board of Oppositions in its decision of 9 May 2003, case Sp. 192/01, not only upheld Hortex’s objection but also decided that Hortino’s trade mark was registered contrary to Article 8(1) and (2) of the TMA. This Article prohibits registration of a trade mark that is contrary to principles of social comity (a very broad Polish civil law legal concept, in some respects similar to the public policy rule) or violates the personal or financial rights of a third party. The PPO also ruled HORTEX trade mark is so-called “hard sign” that is existing on the market for many years and it is easily identified by the customers, thereby the risk of confusing it with another mark is increasingly significant.

Hortino appealed to the Voivodeship Administrative Court in Warsaw, which upheld the contested decision in its judgment of 9 September 2004, case file II SA 2481/03. The Voivodeship Administrative Court also ruled that the registration of Hortino’s mark was in breach of article 9(1)(1) of TMA, that mark being sufficiently similar to an earlier registered trade mark to be likely to confuse consumers, under regular conditions of commerce, as to the origin of goods. Once again, Hortino filed a cassation complaint, this time to the Supreme Administrative Court. The SAC declined to hear the case and upheld the lower court’s decision in its judgment of 24 May 2005, case file II GSK 63/05.

This successfully ended the administrative procedure between the respective parties. The second suit was decided by the civil court and I reported on this case in my posts entitled “Unfair competition delict, case V CSK 237/06“.